Strike 3 Holdings, LLC v. Doe

Filing 8

DECISION AND ORDER granting 6 Motion for Discovery; granting 7 Motion for Extension of Time to Serve. Signed by Hon. Elizabeth A. Wolford on 05/09/2024. (MGB)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
____________________________________
STRIKE 3 HOLDINGS, LLC,
Plaintiff,
DECISION AND ORDER
v.
1:24-CV-00003 EAW
JOHN DOE subscriber assigned IP address
69.204.100.233,
Defendant.
____________________________________
INTRODUCTION
Plaintiff Strike 3 Holdings, LLC (“Plaintiff”) commenced this action on December
26, 2023, in the Northern District of New York, alleging that Defendant downloaded and
distributed Plaintiff’s motion pictures in violation of the United States Copyright Act of
1976, as amended, 17 U.S.C. §§ 101 et seq. (Dkt. 1). The matter was transferred to this
Court on January 2, 2024. (Dkt. 2). Presently before the Court is Plaintiff’s ex parte
motion for leave to serve a third party subpoena prior to a Rule 26(f) conference. (Dkt. 6).
Specifically, Plaintiff seeks to serve a subpoena pursuant to Fed. R. Civ. P. 45 on
Defendant’s internet service provider (“ISP”), Spectrum, so that Plaintiff may learn the
name and address of Defendant in order to serve Defendant with Plaintiff’s complaint.
(Dkt. 6-1 at 4-5). Plaintiff also moves to extend the time for which it has to serve
Defendant. (Dkt. 7). For the following reasons, Plaintiff’s motions are granted.

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DISCUSSION
I.

Third-Party Subpoena Prior to Rule 26(f) Conference
Federal Rule of Civil Procedure 26(d)(1) provides that a “party may not seek

discovery from any source before the parties have conferred as required by Rule 26(f). . .
.” Fed. R. Civ. P. 26(d)(1). However, discovery will be permitted in advance of a Rule
26(f) conference when it is “authorized . . . by court order.” Id. “This is generally viewed
as requiring a showing of good cause.” In re BitTorrent Adult Film Copyright Infringement
Cases, 296 F.R.D. 80, 87 (E.D.N.Y. 2012).
Factors to consider in determining whether there is good cause for the disclosure of
a defendant’s information through an ISP include: “(1) a concrete showing of a prima facie
claim; (2) a specific discovery request; (3) the absence of alternative means to obtain the
subpoenaed information; (4) the need for the subpoenaed information to advance the claim;
and (5) a minimal expectation of privacy by the defendant in the requested information.”
Rotten Records, Inc. v. Doe, 107 F. Supp. 3d 257, 258-59 (W.D.N.Y. 2015) (quoting Catlin
v. Global, No. 14-CV-6324L, 2014 WL 3955220, at *2 (W.D.N.Y. Aug. 13, 2014)).
A.

Prima Facie Claim of Copyright Infringement

Here, accepting the allegations in Plaintiff’s complaint as true for the purposes of
this motion, Plaintiff has made a showing of a prima facie claim of copyright infringement.
“A prima facie claim of copyright infringement consists of two elements: (1) ownership of
a valid copyright, and (2) copying of constituent elements of the work that are original.”
Sony Music Entm’t Inc. v. Does 1-40, 326 F. Supp. 2d 556, 565 (S.D.N.Y. 2004).

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Plaintiff has alleged ownership of motion pictures (the “Works”) and that the Works
have “been registered with the United States Copyright Office.” (Dkt. 1 at ¶ 45). Plaintiff
has also alleged that Defendant “copied and distributed the constituent elements of
Plaintiff’s Works using the BitTorrent protocol” and that “[a]t no point in time did Plaintiff
authorize, permit or consent to Defendant’s distribution of its Works, expressly or
otherwise.” (Id. at ¶¶ 49-50). According to Plaintiff, it has “developed, owns, and operates
an infringement detection system, named ‘VXN Scan,’” and used VXN Scan to determine
that “Defendant used the BitTorrent file network to illegally download and distribute
Plaintiff’s copyrighted motion pictures.” (Id. at ¶¶ 27, 28). “[W]hile Defendant was using
the BitTorrent file distribution network, VXN Scan established direct TCP/IP connections
with Defendant’s IP address.” (Id. at ¶ 29). VXN Scan “downloaded from Defendant one
or more pieces of numerous digital media files,” which Plaintiff identified “as portions of
[the Works].” (Id. at ¶¶ 30-31). Plaintiff alleges that VXN Scan used the “Info Hash”
value, which is “contained within the metadata of the .torrent file correlated with a digital
media file . . . identical (or substantially similar) to a copyrighted work, to download a
piece (or pieces) of the same digital media file from Defendant using the BitTorrent
network,” and that “VXN Scan captured transactions from Defendant sharing specific
pieces of [the Works].” (Id. at ¶¶ 35, 37). Plaintiff further alleges that Defendant’s
infringement is “continuous and ongoing.” (Id. at ¶ 44).
Plaintiff’s allegations are sufficient at this juncture to establish a prima facie case
of copyright infringement against Defendant. See Strike 3 Holdings, LLC v. Doe, No. 21CV-7014 (VEC), 2022 WL 704022, at *3 (S.D.N.Y. Mar. 8, 2022) (“District courts in this
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Circuit have repeatedly allowed copyright holders to subpoena internet service providers
to obtain the identity of the subscriber of an IP address associated with infringing
activity.”); Malibu Media, LLC v. Doe, No. 14-CV-4808 (JS)(SIL), 2016 WL 4574677, at
*6 (E.D.N.Y. Sept. 1, 2016) (finding prima facie case where plaintiff alleged that it was
registered owner of the copyrights and that defendant downloaded, copied and distributed
complete copies).
B.

Specific Discovery Request

Plaintiff has also met the specificity requirement, insofar as Plaintiff seeks the name
and address of the individual assigned IP address 69.204.100.233 for the limited purpose
of enabling Plaintiff to identify and serve process on Defendant. (Dkt. 6-1 at 10).
C.

Absence of Alternative Means and Need for Subpoenaed Information

BitTorrent’s appeal to users is “the large degree of anonymity it provides.” UN4
Prods., Inc. v. Doe-173.68.177.95, No. 17-CV-3278-PKC-SMG, 2017 WL 2589328, at *3
(E.D.N.Y. June 14, 2017). “Absent a Court-ordered subpoena, many of the ISPs, who
qualify as ‘cable operators’ for purposes of 47 U.S.C. § 522(5), are effectively prohibited
by 47 U.S.C. § 551(c) from disclosing the identities of [the defendants] to Plaintiff.”
Digital Sin, Inc. v. Does 1-179, No. 11 Civ. 8172(PAE), 2012 WL 8282825, at *3
(S.D.N.Y. Feb. 1, 2012). “Thus, without granting Plaintiff’s request, [Defendant] cannot
be identified or served and the litigation cannot proceed. Additionally, expedited discovery
is necessary to prevent the requested data from being lost forever as part of routine
deletions by the ISPs.” Id. (finding good cause to issue a Rule 45 subpoena on this basis).
Accordingly, Plaintiff has satisfied the third and fourth factors of the analysis.
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D.

Expectation of Privacy

Finally, Plaintiff’s interest in learning Defendant’s name and address outweighs
Defendant’s privacy interest. See Arista Records LLC v. Doe, 604 F.3d 110, 124 (2d Cir.
2010) (“[W]e regard Doe 3’s expectation of privacy for sharing copyrighted music through
an online file-sharing network as simply insufficient to permit him to avoid having to
defend against a claim of copyright infringement.”).
In sum, good cause exists for immediate discovery in this case by way of a thirdparty subpoena served on Spectrum to enable Plaintiff to ascertain the name and address
of Defendant to effectuate service upon Defendant.
II.

Protective Order
Pursuant to Federal Rule of Civil Procedure 26(c)(1), “[t]he court may, for good

cause, issue an order to protect a party or person from annoyance, embarrassment,
oppression, or undue burden or expense[.]” Plaintiff states that it does not oppose such
procedural safeguards in this case, including allowing Defendant to proceed anonymously.
(Dkt. 6-1 at 12).
In similar cases, courts have issued protective orders due to the possibility that
“many of the names and addresses produced in response to Plaintiff’s discovery request
will not in fact be those of the individuals” who downloaded and distributed the content in
question. Digital Sin, 279 F.R.D. at 242; see also Strike 3 Holdings, LLC v. Doe, No. 1:18CV-02651-AJN, 2018 WL 2229124, at *3 (S.D.N.Y. Apr. 25, 2018) (issuing a protective
order for same reasons). “This risk of false positives gives rise to the potential for coercing
unjust settlements from innocent defendants such as individuals who want to avoid the
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embarrassment of having their names publicly associated” with the allegations in this type
of case. Digital Sin, 279 F.R.D. at 242 (internal quotation marks omitted).
Accordingly, on at least a temporary basis and until such time that Defendant and
any other interested party has an opportunity to be heard, the Court will issue a protective
order to the extent that any information regarding Defendant released to Plaintiff by
Spectrum shall be treated as confidential until further order of the Court. The protective
order, published below, in sum and substance protects against the public disclosure of
Defendant’s name until further order of the Court.
III.

Motion for Extension of Time
Plaintiff has moved for the Court to grant an extension of the time to serve its

complaint. (Dkt. 7). Pursuant to Fed. R. Civ. P. 4(m), a plaintiff has 90 days from the date
the complaint is filed to serve the defendant with the summons and complaint. “[I]f the
plaintiff shows good cause for the failure, the court must extend the time for service for an
appropriate period. Id. Here, Plaintiff seeks an extension of time because without the
Court’s permission to serve a third-party subpoena on Defendant’s ISP, Plaintiff is unable
to obtain Defendant’s identifying information with which to effectuate serve. (Dkt. 7 at ¶
4). “Plaintiff’s inability to identify [Defendant] constitutes ‘good cause’ under Rule 4(m)
for the requested extension.” Rotten Records, Inc. v. Doe, No. 15-CV-6650-FPG, 2016
WL 9460666, at *2 (W.D.N.Y. Sept. 27, 2016). Therefore, pending Plaintiff’s service of
the third-party subpoena and receipt of Defendant’s identifying information from the ISP,
Plaintiff’s motion for an extension of time is granted, and Plaintiff must effectuate service
on or before July 26, 2024.
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CONCLUSION
IT IS HEREBY ORDERED that:
1.

Plaintiff may serve Spectrum with a Rule 45 subpoena commanding

Spectrum to provide Plaintiff with the true name and address of Defendant assigned IP
address 69.204.100.233. Plaintiff is expressly not permitted to subpoena Spectrum for
Defendant’s email addresses or telephone numbers. The subpoena shall have a copy of
this Order attached.
2.

Plaintiff may also serve a Rule 45 Subpoena in the same manner as above on

any service provider that is identified in response to a subpoena as a provider of internet
services to Defendant.
3.

If Spectrum or any other recipient of a subpoena qualifies as a “cable

operator,” as defined by 47 U.S.C. § 522(5), which states:
the term “cable operator” means any person or group of persons
(A) who provides cable service over a cable system and directly or
through one or more affiliates owns a significant interest in such cable
system, or
(B) who otherwise controls or is responsible for, through any
arrangement, the management and operation of such a cable system[,]
then it shall comply with 47 U.S.C. § 551(c)(2)(B), which states:
A cable operator may disclose such [personal identifying] information if the
disclosure is . . . made pursuant to a court order authorizing such disclosure,
if the subscriber is notified of such order by the person to whom the order is
directed[,]
by sending a copy of this Order to Defendant.

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4.

Spectrum shall not assess any charge in advance of providing the information

requested in the subpoena. If Spectrum elects to charge for the costs of production, it shall
provide a billing summary and cost report to Plaintiff.
5.

Any information ultimately disclosed to Plaintiff in response to a Rule 45

subpoena may be used solely by Plaintiff for the purpose of protecting its rights as set forth
in its complaint, shall be kept confidential and not publicly filed, and the Court authorizes
Plaintiff to use initials of Defendant’s first and last name in any public filing, until further
order of the Court.
6.

Plaintiff must effectuate service on or before July 26, 2024.

SO ORDERED.
________________________________
ELIZABETH A. WOLFORD
Chief Judge
United States District Court
Dated: May 9, 2024
Rochester, New York

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